A Supreme Court petition asks the Court to draw the line between patent eligibility and disclosure requirements.

Engineer Jeff Kohler, profiled by Grace Kaste in GeekWire, holds a patent on web conferencing technology that allows participants to watch a live session on delay. After YouTube added pause, rewind, and speed controls to live video, Kohler's company sued Google in 2023. The district court dismissed at the pleading stage for the claims being ineligible subject matter under §101.

The Alice Framework and Functional Claiming

Under the Supreme Court’s test in Alice, courts must ask whether claims are directed to an abstract idea and, if so, whether they add an inventive concept. At argument, Chief Judge Moore asked which of the two steps should screen claims that describe a result without the method, adding "I don't always know where that line is." The judge’s precedential January opinion used both. The claims were directed to "allowing asynchronous review of presentations" for reciting "result-focused functional language" lacking "specificity about how" the results are achieved. No inventive concept was found using the same rationale.

The petition does not challenge the Alice framework, but rather argues one observation decided both steps, turning eligibility into an inquiry on the sufficiency of the patent disclosure under §112 "without evidence, claim construction, or the challenger's burden of proof." A second question challenges dismissal because the patent owner "did not plead facts negating ineligibility," a defense §282(b) requires the accused infringer to plead.

Takeaways for Innovators

  • AI claims describing only what a trained model produces face similar problems. Kohler's specification included C++ code, and the opinion is silent on this disclosure. Rather, the court found the details of the method belong in the claims.
  • Patent owners can usually amend to allege an unconventional invention. Here the court treated the specification's description of the components as an admission of conventionality, making amendment futile. Naming commercially available components can support disclosure, but avoid calling the subject matter "conventional" or "off-the-shelf."
  • The petition's §112 argument tracks the USPTO's precedential Ex parte Desjardins. Desjardins warns against evaluating claims "at such a high level of generality" and calls §§102, 103, and 112 "the traditional and appropriate tools." A grant could carry the Office's approach into the courts.

Next Steps at the Court

Google waived a response on Aug. 25. After the Sept. 28 conference, the Court may deny review or ask Google to respond, the usual step before any grant. A decision by the Court could settle the boundary between §101 and §112, and in doing so, shape how future courts treat AI-enabled inventions.

Sources

  1. GeekWire, Grace Kaste (Sept. 14, 2026): https://www.geekwire.com/2026/this-software-engineer-is-taking-google-to-the-u-s-supreme-court-to-clarify-patent-law/
  2. 𝘜𝘚 𝘗𝘢𝘵𝘦𝘯𝘵 𝘕𝘰. 7,679,637 𝘓𝘓𝘊 𝘷. 𝘎𝘰𝘰𝘨𝘭𝘦 𝘓𝘓𝘊, No. 26-236 (petition; conference Sept. 28, 2026): https://www.supremecourt.gov/docket/docketfiles/html/public/26-236.html
  3. Amicus brief supporting petitioner (Sept. 23, 2026): https://www.supremecourt.gov/DocketPDF/26/26-236/425295/20260923091805144_26-236%20Amicus%20Brief.pdf
  4. 𝘜𝘚 𝘗𝘢𝘵𝘦𝘯𝘵 𝘕𝘰. 7,679,637 𝘓𝘓𝘊 𝘷. 𝘎𝘰𝘰𝘨𝘭𝘦 𝘓𝘓𝘊, 164 F.4th 1373 (Fed. Cir. 2026): https://www.cafc.uscourts.gov/opinions-orders/24-1520.OPINION.1-22-2026_2636405.pdf
  5. Oral argument (Oct. 6, 2025): https://www.cafc.uscourts.gov/10-06-2025-2024-1520-us-patent-no-7679637-llc-v-google-llc-audio-uploaded/
  6. 𝘌𝘹 𝘱𝘢𝘳𝘵𝘦 𝘋𝘦𝘴𝘫𝘢𝘳𝘥𝘪𝘯𝘴 (USPTO Appeals Review Panel Sept. 26, 2025) (precedential): https://www.uspto.gov/sites/default/files/documents/202400567-arp-rehearing-decision-20250926.pdf